The following is an edited transcript of my video, Building a Strong Office Action Response for a Trademark Application.

An office action is when an examiner at the USPTO issues a letter to the applicant asking for more information, notifying them of a procedural issue, or notifying them of a substantive issue.

Responses to Office Actions are something that I’ve spent a lot of time thinking about over the years. I’ve spent so much time working on them that I actually taught a class about them. I’ve worked hard to focus on the core elements of a strong or effective office action response. And I want to briefly share the four key elements of a strong response.

  1. The first is finding compelling evidence. When you’re building a substantive response, whether it’s a likelihood of confusion issue, a descriptive issue, or some other issue, attaching compelling, usable evidence that’s tangible to the response makes a significant difference. It goes a long way towards enhancing and building the argument.
  2. The second element is knowing the relevant cases and law that apply to the issue that are going to help incorporate and build your argument significantly; they are important to know and important to reference in the response.
  3. The third element of an effective response is knowing the USPTO’s procedures. Their procedures are very particular and very complex. There are new issues that come up now—even after I’ve been doing this for 20 years on thousands of responses—where I’ve never seen the exact procedural situation. But the core basic procedural issues are important to know for every response: how to format it, how much time you have to respond, etc.
  4. Finally, the fourth element of a strong response is tying it all together with persuasive writing. I work a lot on this when I’m teaching law students or when I’m teaching other lawyers in finding the right voice: the right mix of professional legal writing, but not so overly formal that the substance and persuasion that you’re trying to incorporate gets lost. I think an effective writing style for an office action response is not quite as formal as a legal brief or legal memo; It is more akin to a business memo with evidence and case law included in it.

If you incorporate these four elements into an office action response, that is what I believe will give the best chance of convincing the examining attorney to take your position and perhaps withdraw a refusal.

If you have questions about office action responses, you can reach out to me on email, on social media, in the comments here, or on my website at erikpelton.com.


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